Archived
updates for Monday, February 28, 2005

When was the last time your intellectual property counsel did anything for free? If you can't answer that question, then maybe you need new counsel.

As part of my pro bono and marketing efforts, I would be pleased to visit your company's facilities anywhere in the world to deliver a free, practical seminar aimed at helping engineers and marketers identify and avoid intellectual problems. Below is a typical agenda that I suggest to new clients. However, the material can be easily modified to suit the needs of your particular business.

Free I/P Watch Services

In addition to this news service and free ducational seminars, I also offer my clients free patent and trademark "watch services." Once a month I look at new filing and allowance information available on the Internet from the U.S. Patent and Trademark Office for a long list of my client's competitors, and also for certain technological areas.

This proactive approach typically generates zero to three new matters each month for a large client that is then happy to foot the bill for services that will allow them to address problems before they turn into more-expensive lawsuits. It also helps to educate me and the client about the intellectual property issues facing their industry.

Of course, that type of education can be quite time-consuming. But, I have never met a client that wasn't just tickled pink to get something for nothing from their attorney, especially when it might help avoid a lawsuit that could otherwise call their managerial judgment into question with the boss.

When was the last time your intellectual property counsel did anything for free? If you can't answer that question, then maybe you need new counsel.

ThomasNet claims to be "the most comprehensive resource for industrial information. Go straight to the source of product, company information, CAD drawings and more. ThomasNet Industrial News Room provides current, reliable industrial news articles which are delivered on a timely basis covering the whole range of products from adhesives through waste handling equipment. This premier news source serves the new product information needs of the industrial marketplace through websites, RSS feeds, e-marketplaces and online publications."

With regard to the fifth alternative, they conclude that their empirical data can provide litigants and judges with a baseline for assessing the reasonableness of delay caused by the filing of multiple continuations by the patentee in determining the applicability of equitable remedies such as prosecution laches:

We suggest that any patent pending six years or longer ought to automatically be subject to scrutiny for laches â€“ a presumption of laches. Six years is more than two standard deviations from the mean of 2.47 years. Although there is some variation by technology in the mean amount of time an application spends in prosecution, that variation is not substantial and would not be significant if a six year presumption were created. For example, measuring the time from the most recent filing date to issuance date of the patents issued in each technological class,192 the technology class with the shortest mean 1.53 years was class 150 Purses, Wallets and Protective Covers and the technology class with the longest application time of 3.18 years was 380 Cryptography. The difference in prosecution time may be somewhat related to the complexity of the technology, but in the case of cryptography many of the patents that issued in this class were delayed because of secrecy orders related to national security issues. Having reviewed the data on each technology class, we conclude that while there is variation by class, the six year presumption is fair to all classes and absent other factors, difference in technology do not justify different presumptive laches periods.

. . . Of course, like litigation laches, the prosecution laches presumption ought to be rebuttable. If the patentee can demonstrate that the delay was not unreasonable but instead there was a legitimate reason why prosecution took so long, then it ought to be able to overcome the presumption. We can think of several reasons that ought torebut the presumption: (1) delay caused by an appeal to the Board, the district court, or the Federal Circuit; (2) delay caused by an interference; (3) delay caused by PTO error, or (4) delay caused by a secrecy order that prohibited the patent from issuing.

A February 2000 study by Wesley M. Cohen, Richard R. Nelson, John P. Walsh of the National Bureau of Economic reserach suggests that there is also a good deal of patenting that is not readily explained by the relative effectiveness of patents as a device for protecting the profits due to specific inventions. In "Protecting Their Intellectual Assets: Appropriability Conditions and Why U.S. Manufacturing Firms Patent (or Not)" the authors discuss their interviews and survey results on the reasons why firms patent. They conclude that there are common uses of patents that stand apart from the function of protecting the profits directly associated with either the licensing or commercialization of the patented invention.

One broader use of patents observed particularly in chemical (apart from drugs) and other discrete product industries is their combination to build patent fences around some patented core invention. A second common use of patents which also goes beyond the licensing or commercialization is patenting to become or remain a major competitor (i.e., "player") in an industry, often via the amassing of large portfolios:

These patents appear to be used as the basis for either threatening ordefending against litigation independent of whether they are considered to beeffective in their more conventional applications. This suggests that patentscan be used either defensively or offensively even if they are weak or untested.They need only confer the right to sue and thus impose the costs of litigationand possible injunctive relief on rivals. But presumably the effectiveness ofpatents in such litigation-intensive strategies depends upon the firm's abilityto support the requisite legal talent, as suggested by our findings that smallerfirms are disproportionately dissuaded from applying for patents due to thecosts of their defense and disproportionately report patents to be ineffective.The broad issue posed, however, by the pervasive defensive use of patents iswhether the social value of patenting is substantially reduced "because itrequires all to assume the overhead of defensive patenting."

"Intermittant Windshield Wiper Control System with Improved Motor Speed Control"

Robert W. Kearns, the inventor of intermittent windshield wipers, who won multimillion-dollar judgments against Ford and Chrysler, died on Feb. 9. "He was feisty, determined and he established the fact that he made a contribution to the auto industry that was unique," reportedly said Judge Avern Cohn of Federal District Court in Michigan, who presided over several of the pro se patent trials brought by the independent inventor.

Kearns felt so strongly that he had recouped only part what automakers had made from his inventions, that he left millions of dollars from Chrysler uncollected in a federal court account for years. "Everyone wants the David and Goliath story," said his surviving daughter Maureen Kearns. "The lesson, I guess, is to do the best you can do," she said. "He enjoyed his fight, but not the full breadth of life. The lesson was to make your life count."

Send your nomination of Robert Kearns to the National Inventors Hall of Fame in Akron Ohio here. Add his story to those of the over 200 other men and women whose patented inventions, life-saving tools, labor-saving devices, and technological innovations have become the basis of the American economy and society.

Archived
updates for Friday, February 25, 2005

EEVL is the Internet Guide to Engineering, Mathematics and Computing. Its mission is to provide access to quality networked engineering, mathematics and computing resources, and be the national focal point for online access to information in these subjects. It is an award-winning free service, created and run by a team of information specialists from a number of universities and institutions in the UK.

Archived
updates for Thursday, February 24, 2005

The Special 301 provisions of 19 U.S.C. Â§ 2242 call upon the United States Trade Representative to identify countries which, inter alia, "deny adequate and effective protection" to U.S. intellectual property or deny "fair and equitable market access" to U.S. persons who rely on intellectual property protection. On January 3, 2005, the USTR invited submissions from the public on policies and practices that should be considered in connection with designating countries as Priority Foreign Countries under this statute. On February 11, 2005, the International Intellectual Property Alliance submitted their comments.

The International Intellectual Property Alliance (IIPA) is a private sector coalition formed in 1984 to represent the U.S. copyright-based industries in bilateral and multilateral efforts to improve international protection of copyrighted materials. IIPA is comprised of six trade associations, each representing a significant segment of the U.S. copyright community.

Unfortunately, production capacity now greatly exceeds legitimate demand,with the difference inuring to the benefit of illegal pirate enterprises.Increasingly, recordable optical media are also used to "burn" unauthorizedcopies on a commercial basis. Pirate CDs, VCDs, CD-ROMs and DVDs containingprotected music, sound recordings, audiovisual works, business and entertainmentsoftware and books and journals have quickly decimated the market for legitimateU.S. products. The growth in the number and capacity of optical disc factoriesaround the globe has been staggering. Based on our survey of optical discproduction in 77 countries/territories:

There were as many as 973 optical disc production plants producing"finished" optical discs worldwide, having 4,405 production lines, with aproduction capacity of nearly 16 billion discs in 2004.

Well over 1,100 optical disc plants exist worldwide producing both finishedand blank discs, having over 7,800 production lines, with a production capacityof more than 27.8 billion discs in 2004.

Production capacity of finished discs shot up to as much as 16 billion discsin 2004, from a reported 9.5 billion discs in 2003, a 66% increase in reportedproduction capacity over the previous year.

Senior officials of the United States Patent and Trademark Office, as well as a representative from the Patent and Trademark Depository Library Program, will be available live on-line Thursday, February 24, from 2 to 3 pm (EST). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the online will be posted on the home page of the USPTO website at 10 am (EST) on Thursday. Inventors can begin logging on for the on-line at 1:30 pm.

Archived
updates for Wednesday, February 23, 2005

According to a new paper by Hall Wegner, vast disparities exist in practical terms for patent infringement determinations in the United States, Germany, the United Kingdom and Japan:

Patent scope may be broadened far beyond the literal wording of claims in Germany whereas the United Kingdom has no room for expansion of scope under a doctrine of equivalents; both the United States and Japan lead the world in doctrines to narrow the effective scope of protection by exclusion from infringement of embodiments within the ordinary meaning of patent claim terms. Prosecution history usage for claim construction is virtually nonexistent in the United Kingdom and Germany.

Strategic advantages â€“ and disadvantages â€“ also arise from language and cultural factors:

The three foreign fora all deny a jury trial, while all three have highly specialized patent tribunals that provide a predictable brand of patent jurisprudence. Reminiscent of the American patent landscape before Blonder-Tongue where the same patent could be held invalid west of the Mississippi in the Eighth Circuit and then held valid just across the river in Illinois within the Seventh Circuit, today there are vast disparities in the rigors of applying patent validity standards amongst the four fora. Adverse rulings or inconsistent pleadings in foreign fora are coming back to bite the patentee in parallel American litigation.

He also points out that many patent attorneys fail to appreciate that U.S. trial courts have the discretion to hear a parallel foreign patent infringement suit concurrently with a domestic suit. In his view, "it is perhaps time to rethink what one scholar has deemed the 'parochial attitude' of Mars Inc. v. Kabushiki-Kaisha Nippon Conlux," 24 F.3d 1368, 1375 (Fed. Cir. 1994) and consider the intoduction a "cross-border" Blonder-Tongue estoppel.

A February 21, 2005 article from the National Law Journal is reporting that the sports industry is struggling to keep pace with copyright violations in media that they can't control. "Player statistics are in the public domain. We've never disputed that," reportedly said Jim Gallagher, senior vice president, corporate communications for MLB Advance Media. "But if you're going to use statistics in a game for profit, you need a license from us to do that. We own those statistics when they're used for commercial gain."

David J. Freeland became the USPTO's new Chief Information Officer on February 22, 2004. According to the press release,

Freeland has over 25 years of information technology (IT) experience, and most recently was the deputy commissioner for management information systems with the Texas Department of Human Services. As the deputy commissioner, Freeland led one of the largest IT organizations in the state of Texas. He supervised more than 600 employees charged with supporting over 300 agencies and private organizations located in over 1,000 sites across the state. He also had oversight responsibility for more than 700 IT maintenance and new development projects each year, with approximately 75 of them major projects.

"A Video Introduction to the Patent System" is available from the Federal Judicial Center here. According to their website,

This free, 17-minute video from October 2002is designed to be shown to jurors in patent jury trials. It contains important background information intended to help jurors understand what patents are, why they are needed, how inventors get them, the role of the Patent and Trademark Office, and why disputes over patents arise.

"An Introduction to the Patent System" was developed with the assistance of an advisory committee of district judges and patent attorneys. Special care was taken to ensure that it provides an impartial and objective view of the patent process. It is, however, up to the individual trial judge to decide whether or not to use this video in patent jury trials. The Center is simply making it available as a resource.

Archived
updates for Tuesday, February 22, 2005

While I apologize for posting non-I/P information here, I urge anyone who knows a child facing developmental delays to check out "Autism: The Hidden Epidemic" this week on NBC television, and to feel free to contact me for more information. Early intervention truly is the key to stemming the autism epidemic. It worked wonders for my child.

"The key to successfully harvesting ideas from prior art patents is to educate the business management and the engineering staff. Management must understand the liability issues and ensure that the company is properly protected when allowing the engineering staff to have access to prior art patents. Similarly, the engineering staff must have sufficient education to know how to understand what they are reading and how to use these tools effectively." --Russ Krajec in "Using Prior Art Patents to Build Your Client's Business"

And, to arrange a free, half-day seminar on these and other intellectual property issues for the engineers and marketers in your business organization, contact me, Bill Heinze.

"Simply put, the system is too complicated, even for a computer geek like me. I beleive the current system is doomed to be one that is tried, occasionally, by early adopters and curiosity-seekers. It will not enjoy widespread use by the patent bar, and the experimentation rate will dwindle over time as the experimenters, like me, become more and more frustrated with the system." --J. Matthew Buchanan via his Promote the Progress blog.

"Each time a DVD player is sold, the pool receives $2.50 for the MPEG-2 decoder the player contains. Each time a prerecorded DVD disc is sold, the pool pockets 3 to 4 cents. These royalties are split among the patent holders in the pool, and MPEG LA takes a 10 percent cut, according to one person with knowledge of the company's business model."

Since MPEG-2 launched in 1997, MPEG LA has formed six pools, all related in one way or another to video.

Archived
updates for Monday, February 21, 2005

The Uniform Dispute Resolution Procedure has become accepted as an international standard for resolving domain name disputes. Here are a few facts from World Intellectual Property Organization's UDRP Center on February 18, 2005:

An average of 3.4 UDRP and UDRP-based cases were filed per calendar day in 2004, bringing the total number of cases received in 2004 to 1,179 â€“ an increase of 79 cases (or 6.6%) as compared to 2003.

Of the total of 7,010 UDRP and UDRP-based cases the Center has received, 6,783 (96.76%) have been resolved. In the 5,414 decisions they have rendered, WIPO panels have found for the complainant in 4,512 (83.3%) cases. The remainder of the resolved cases were settled by the parties.WIPOâ€™s UDRP and UDRP-based cases filed since 1999 have by now covered over 12,500 separate domain names.

Most disputes concern international domains, with .com representing over 80% of names involved. However, in 2004 the Center also dealt with 70 cases involving country code top-level domains (ccTLDs), a 37 percent increase over the previous year. So far, parties to WIPO UDRP disputes have come from 124 different countries. Domain names themselves may also be presented in different scripts, such as Chinese, Cyrillic or Korean. The Center has handled 50 such "multilingual name" disputes so far, with further growth expected as the Internet becomes increasingly multilingual.

All domain name decisions handled by the Center are fully indexed and published on the Centerâ€™s web site. The WIPO Arbitration and Mediation Center makes available model arbitration and mediation clauses.

The World Intellectual property Organization's next General Course on Intellectual Property (DL 101) will start on March 1, 2005. The course is available in 7 languages (Arabic, Chinese, English, French, Portuguese, Spanish, and Russian) and is free-of-charge at http://academy.wipo.int.

New advanced courses on different aspects of intellectual property will also be available this year. These include the Advanced Course on Copyright and Related Rights (DL 201) in English, French and Spanish. This course covers a range of issues including WIPOâ€™s role in this area as well as recent developments and trends in the area of international copyright law. The course will run from May 1 to July 10, 2005. The Advanced course on Electronic Commerce and Intellectual Property (DL202) will also be available in English. This course covers IP aspects of e-commerce in three main areas, namely copyright, trademarks and patents. This course will run from May 1 to June 15, 2005. Registration dates for both courses run from March 1 to 15, 2005.

Three additional courses: Traditional Knowledge and Intellectual Property (DL 203), Biotechnology and Intellectual Property (DL 204) and the International Protection of Plant Varieties (DL-205) are expected to be launched later this year. These courses will be offered on a fee basis with reduced charges for participants from certain countries. Further information about fees is available from the Academy website (http:// academy.wipo.int).

The WIPO Summer School will also resume this year. This is a four-week program in English held in Geneva from July 4 to 29, 2005. The program consists of lectures and individual or group research on assigned topics. The program is open to candidates from all regions of the world and from all academic backgrounds. For further details about all courses offered by the WIPO Academy, please consult http://www.wipo.int/academy.

According to a February 18, 2005 article from CNetNews.com, "Hundreds of people from across Europe gathered in Brussels on Thursday to demonstrate against software patents." Their message to EU Commissioner McCreevy was that "The European Union has become a Banana Republic. The division of competences between the legislative and the executive branch is not functioning as it should. And there is a lot you can do about it. . . ."

Leaders of the Parliamentâ€™s political groups were also reported to have unanimously backed a request that the European Commission repropose the draft directive on the patenting of inventions implemented by computer.

"[T]he meeting agreed that the following six issues should be addressed in an accelerated manner within WIPO with a view to progressive development and codification of international intellectual property law: prior art, grace period, novelty, inventive step, sufficiency of disclosure and genetic resources. These issues should be addressed in parallel, accelerated processes, the first four issues (prior art, grace period, novelty and inventive step) in the SCP and the other two issues (sufficiency of disclosure and genetic resources) in the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC). Each of the SCP and the IGC should agree on a timetable and report progress on the development of their discussions of the issues to the other. The meeting underlined the importance of the continued active pursuit of discussions and work within WIPO on issues related to development and intellectual property so that a robust, effective and actionable WIPO Development Agenda could emerge."

Archived
updates for Thursday, February 17, 2005

According to the January 2005 PCT Newsletter, it is generally no longer necessary to file a PCT demand for international preliminary examination within 19 months from the priority date in order to extend the time limit for entry into the national phase. Although certain States have notified the International Bureau of the incompatibility of their national law with the modified 30-month time limit, all six remaining States which have made such a notification are covered by a regional designation (AP or EP). This enables applicants to enter the regional phase (as distinct from the national phase) in those States within the time limit of 31 months (that is, the time limit under PCT Article 22(3) in respect of those States). The States concerned, which are listed as a reminder on page 2 of each issue of the PCT Newsletter, are:

If, however, you have a particular need to enter the national phase in any of the above-mentioned States (as opposed to the regional phase), and you wish to extend the time limit for entry into the national phase in that or those States from 20 to 30 months, then you should make sure that the demand is filedwithin 19 months from the priority date.

Archived
updates for Wednesday, February 16, 2005

"I don't think anyone knows in terms of crude percentages how to differentiate between humans and nonhumans," John Doll, Deputy Commissioner for Patents at the USPTO reportedly told The Washington Post. Yet neither is the office comfortable with a "we'll know it when we see it" approach, he added: "It would be very helpful . . . to have some guidance from Congress or the courts."

His comments followed from a discussion of U.S. Patent Application Serial No. 10/308135 which originally claimed "A chimeric embryo comprising cells from a first and one or more second animal species, wherein said first animal species is human, wherein said second animal species is non-human, and wherein said second animal species is non-primate." In its final rejection of the application, the USPTO noted, among other things, that

Applicant argues that an interspecific animal maturing from the chimeric embryo contains cell contributions from both species throughout all its organs, regardless of whether the chimeric embryo consisted of 100 human cells and one non-human cell or vice versa. There does not appear to be a factual basis in the specification for this argument. Instead, the specification discloses that an animal developing from the chimeric embryo would be a source of human organs. Further, as presented previously in this office action, [prior art references] teach that chimeric embryos can develop into animals of chimerism limited to one organ or no chimerism. Thus based on these results, an embryo of the present claims could certainly produce an animal of only one cell type or an animal predominantly of one cell type. Further, there is no basis for excluding a human that has no non-human cells from the scope of claim 50, which claims a descendant of the chimeric animal. The germ cells of the claimed chimeric animal would be either human or non-human, but not interspecific. Descendant progeny would not be interspecific.

Applicant argues that the statute does not restrict patentability based on whether the claims cover a human being, and that the Director lacks authority to impose a limitation on patenting a human. For reasons already stated on the record, the Office does not agree that humans are patentable subject matter.

In fact, MPEP Section 2105 states that "If the broadest reasonable interpretation of the claimed invention as a whole encompasses a human being, then a rejection under 35 U.S.C. 101 must be made indicating that the claimed invention is directed to nonstatutory subject matter."

"There are chimeras out there that serve very valuable purposes in medical research, such as mice that make human antibodies," Michael Werner, Chief of Policy for the Biotechnology Industry Organization, reportedly told the Post in the same article. "This is sufficiently technical scientifically that it should be left to scientific bodies like the National Academy of Sciences to decide." The NAS report is now due in April.

Preventing counterfeit or pirated goods from entering the EU can be much more efficient than trying to stop distribution once the goods enter the EU. According to a February 3, 2005 artcile by Isabel Davies, a Community application can be made to one Customs Authority with a request that the application covers any or all of the 25 Member States of the EU. Once the Community application is granted, a copy of the decision with the supporting information and any necessary translation is sent to the other nominated Member States. Granted applications are valid for one year and renewable annually by simply providing updated information regarding any new intellectual property rights which may have been obtained.

A new version of the PCT-SAFE Client software (version 3.50 (build 0002.169)), dated 14 January 2005, is available to download from the PCT-SAFE website. This version includes several enhancements and modifications to the software. For example, it enables the attachment of a single specification file in PDF format in fully electronic applications. It also enables the filing PCT-SAFE applications on-line with the Korean Intellectual Property Office as receiving Office, with effect from 11 February 2005.

WIPO's electronic filing software, PCT-SAFE (Secure Applications Filed Electronically), offers PCT users the means to prepare their international applications in electronic form and to file them either via secure online transmission or using physical media such as CD-R. The software can also be operated in PCT-EASY mode where applications are filed on paper, accompanied by the request form data and abstract on diskette.

"This website has been permanently shut down by court order because it facilitates the illegal downloading of copyrighted motion pictures. . . Stealing movies leaves a trail. The only way not to get caught is to stop."

The effort to pull out of an IP strategic hole is significant, taking years andcommitted resources. That might explain why many companies haveopted for a â€œno-brainerâ€� approach of patenting everything in sight. But theintelligence behind this type of fix is in short supply. Having many patents isnot necessarily a solution, says Ed Kahn, CEO of the Cambridge, Mass.-based IPconsulting firm EKMS. Starting in the late 1990s, this strategy became popularas many CEOs read Rembrandts in the Attic: Unlocking the Hidden Value of YourPatents. They were taken with the prospect of found money in their filingdrawers and instructed corporate counsels to protect everything. But the resultslargely backfired. â€œItâ€™s usually velvet Elvises in the attic,â€� Kahn says. â€œInlarge companies with extensive IP, sometimes 80 to 85 percent [of patents] arenonpracticed. They neither protect company products nor license to anyone else.R&D goes one way, the strategic marketing group goes another, and beforelong youâ€™ve got a lot of underutilized or unused patents.â€�

David Israleite, former head of the Department of Justiceâ€™s Task Force on Intellectual Property, was named President and CEO of the National Music Publisher's Associatipon on February 7, 2004. Prior to his appointment to the Department of Justice in 2001, Israelite served as the Director of Political and Governmental Affairs for the Republican National Committee. The National Music Publishersâ€™ Association (NMPA) is a trade association representing more than 800 American music publishers and is the parent of the Harry Fox Agency for mechanical licensing of copyrighted musical compositions for use on CDs, records, tapes, and certain digital configurations.

Fame for confusion purposes arises as long as a significant portion of the relevant consuming public, namely, purchasers of champagne and sparkling wine, recognizes the mark as a source indicator. Although this court has not directly addressed the question of what segment of the consuming public must be aware of a mark in order for it to be considered famous in a likelihood of confusion analysis, it has indirectly suggested that a markâ€™s renown within a specific product market is the proper standard. See Bose Corp., 293 F.3d at 1376 (2002) ("Large market shares of product sales or large percentages of advertising expenditures in a product line would buttress claims to fame."). Similarly, this courtâ€™s precedent has defined the relevant product market for purposes of determining likelihood of confusion as customers and potential customers. Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 716 (Fed. Cir. 1992) (holding that purchaser confusion is the "primary focus" and, in case of goods and services that are sold, "the inquiry generally will turn on whether actual or potential â€˜purchasersâ€™ are confused"). Accordingly, this court holds that the proper legal standard for evaluating the fame of a mark under the fifth DuPont factor is the class of customers and potential customers of a product or service, and not the general public. The Board did not err in so holding.

In Lisle Corporation v. A.J. Manufacturing Company (Fed. Cir. Feb. 11, 2005)Lisle delivered the prototype tool to four different automobile repair shops around December 1989. Lisle did not receive any payment for those tools, but also did not require any of the mechanics to enter into a formal confidentiality agreement. In June 1992, over thirty months after the first prototype tool was delivered, Lisle filed its patent application. According to the Federal Circuit:

[S]ubstantial evidence supports the juryâ€™s findings of fact in favor of Lisle on the question of experimental use, and those findings support the conclusion of lack of public use. To counter A.J.â€™s attempt to show public use, Lisle relies on the testimony of Mr. Danny Williams, coinventor of the â€™776 patent and an engineer for Lisle, which was presented to the jury. Williams testified that he needed to know how well the wrench disc would fit on the inner tie rod socket and whether the prototype tool would fit in the confined location of the tie rod in different automobile models. Williams also stated that, under company protocol, he and other engineers at Lisle would have contacted the mechanics who were given the prototype tool every two to four weeks by telephone or in person to receive testing feedback.

Williams further testified that he modified the design of the retainer in the prototype tool and added additional wrench disc sizes based on comments he received from the outside mechanics. Finally, Williams explained that although there was no formal confidentiality agreement between Lisle and the mechanics who were given the prototype tools, Lisle had prior working relationships with those mechanics. Williams also believed that the mechanics knew that the prototype tool was given to them for experimental purposes.

The jury was also presented with "General Meeting Reports" that were drafted by the president of Lisle, Mr. John Lisle. The reports gave updates on the then-current status of the tie rod tool project, plans for future testing, concerns regarding the commercial viability of the tools, and suggestions from outside mechanics regarding how to improve the design of the tool. Mr. Marvin Negley, Manager of Engineering at Lisle, also testified that those reports were based on information that Mr. Lisle received during weekly management meetings. While we express no view as to whether we as fact-finders might have concluded that this evidence was sufficient to rebut a prima facie case of public use, we agree with Lisle that the submitted testimony and reports do constitute substantial evidence from which a reasonable jury could find that Lisle rebutted the prima facie case of public use and thus A.J. failed to prove by facts supported by clear and convincing evidence that the â€™776 patent was invalid for public use.

As you can see from the letter, the USPTO would like very much to benefit from everybody's experience with PDF format. I urge you to prepare a response to the letter and to send it to the email address listed in the letter. I expect that many members of this list server have already received this letter from the USPTO. But everybody, if you have not, I urge everybody to read the letter and respond to it. This will help the USPTO get more information about user experiences with PDF files.

According to a February 15, 2005 press release from WIPO, Germans were the biggest users of the "Madrid" international trademark systems for the twelfth consecutive year with 5,393 international applications (18.3%), followed by France with 3,503 (11.9%), Italy 2,499 (8.5%), Benelux 2,482 (8.4%) and Switzerland 2,133 (7.2%).

Within 12 months of signing up to the Madrid Protocol - one of two treaties that govern the system - the United States of America filed 1,734 (5.9%) international applications to rank sixth among the biggest users of the Madrid System system.and representing a 109% increase in use of the system as compared to the previous year.

According to the January 2005 PCT Newsletter, on 27 January 2005, the International Bureau received a notification from the European Patent Office (EPO) prolonging the period for which the limitation of the EPOâ€™s competence as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) in the field of business methods is applicable:

â€œThe limitation of the EPO's competence as a PCT Authority concerning the field of business methods as set out in paragraph 1(a) and (b) of the Notice from the President of the EPO of 26 November 2001 and due to expire on 1 March 2005, is to be prolonged for a further period of 2 years from 1 March 2005, i.e. until 1 March 2007.â€�

There is nothing expressly set out in the consent judgment between Thatcher and Kohlâ€™s extending Thatcherâ€™s rights to any third party, including any "successor-in-interest." This silence is the functional equivalent of the partiesâ€™ express intent to exclude language of assignment. Equally as telling is that the consent judgment specifies successors and assigns when listing Kohlâ€™s obligations. It provides that it is enforceable against "Defendant corporations, their servants, employees, successors-in-interest, subsidiaries and all persons acting under, in concert with, or for them. . . ." When the inclusion of these provisions is contrasted with the absence of any provision permitting anyone other than Thatcher to enforce his rights under the consent judgment, the absence becomes profound. Indeed, around the same time Thatcher sued Kohlâ€™s, he also sued Wal-Mart for allegedly infringing the same trade dress. In settling that case, Thatcher and Wal-Mart both bound their "successors and assigns." Thatcher and Deckers must live with the consequence of failing to include similar language of assignability here.

According to a report from Intellectual Property Watch on February 12, 2005, participants at the invite-only meeting on patent harmonization earlier this month in Washington agreed to hold meetings of two working groups, one on substantive patent law harmonisation â€“ chaired by Australia â€“ and the other on development issues, covering proposals at WIPO on development and on genetic resources â€“ chaired jointly by the Netherlands and the United Kingdom. The chairs volunteered and were not opposed, one participant said.

No substantive harmonisation issues were discussed at the first Washington gathering, which was â€œsolely an initial organising meeting,â€� according to the USPTO spokeswoman. Differences in patent regimes to be addressed later include the United Statesâ€™ system of patenting based on â€œfirst to inventâ€� versus the rest of the worldâ€™s method of â€œfirst to file,â€� and the length of the grace period given to inventors before making inventions public, according to industry sources.

The group also agreed to consider a â€œtrilateralâ€� proposal put forward last fall by the United States, Japan, Europe to create a new work plan on these issues. That proposal said the subject has been debated mostly ineffectively for 20 years, and that the current approach is â€œnot workable,â€� with the draft treaty bogged down by political issues that lead to â€œprotracted debate.â€� The proposal called for beginning with issues on which consensus might be obtainable, focused on aspects of determining â€œprior artâ€� in patent applications. It also stressed that gains in these areas would benefit all countries.

The effort led by the United States to move the debate outside WIPO has raised alarm for some developing nations who fear the meetings are intended to pressure them and WIPO to trim development objectives from the negotiations. In fact, many developing countries view efforts to negotiate a substantive patent law treaty as an attempt by developed countries to â€œexport their patent systems to other parts of the world,â€� one developing country official said. They also fear it would undermine the flexibility countries have under the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights to pursue their own policy goals, the official said, adding that that flexibility is reaffirmed by the Doha Declaration on TRIPs and public health.

â€œThe allegation that the exploratory meeting is meant as a threat to WIPO and to developing counties is simply not true,â€� a USPTO spokeswoman said this week. â€œOther WIPO Groups, such as the Latin American group, Asian group, African group, meet regularly to coordinate positions. The exploratory meeting was just that - a meeting of Group B [developed] countries to discuss how to best make progress on issues in WIPO.â€�

The full group will reportedly meet again in June, presumably just prior to the next WIPO meetings. Subgroup meetings will be held between March and May, with anyone from the full group is invited to participate in the subgroup meetings, the chairs said. The list of participants at the Washington meeting included Australia, Belgium, Canada, Czech Republic, Denmark, European Commission, European Patent Office, France, Germany, Hungary, Ireland, Italy, Japan, Lithuania, Luxembourg, Netherlands, Portugal, Romania, Slovak Republic, Spain, Sweden, Switzerland, United Kingdom, and the United States.

"The Commission regrets very much that the software patent will not be on the agenda. It has been removed," European Commission spokesman Olivier Drewes reportedly told a news conference on Friday. He said the legislation had run into new problems but declined to give details.

According to their website, Cornell Univerity's "The Cutting Edge" focuses on the apparel and sewn products industry. It consists of a set of seven lessons that can stand alone to provide information on a specific business variable or used together as a primer on starting or growing an apparel or sewn products business.

Compare the purposes, registration process, and length of protection of copyrights, trademarks, patents, and trade secrets and decide which is right for your entrepreneurial venture.

Describe the limitations of IP law for textile surface designs (2D) and apparel designs (3D) in the US and how these affect the way you develop and market apparel and sewn products.

Compare the advantages and disadvantages of licensing the right to use your business trademark, copyrighted material, or patent rather than producing and selling it yourself.Know where to conduct an on-line preliminary trademark or patent search.

According to a January 25, 2005 article by Judith M. Hecker, the 2004 amendments to Section 170 of the Internal Revenue Code now limit the amount of the charitable deduction for patents and similar intellectual property ("IP") contributed after June 3, 2004 to the lesser of the property's basis or fair market value when contributed.

However, in certain circumstances, an additional deduction may be allowed in the year of the contribution or subsequent years, based on a sliding-scale percentage of the "qualified donee income" received or accrued by the donee that is allocable to the contributed patent or IP. However, these additional deductions also require that the donor provide notice to the donee, and that the donee substantiate and reporting the additional deductions.

Archived
updates for Thursday, February 10, 2005

For those of us who not part of the inside-the-beltway patent intelligentsia, Dennis Crouch of the Patently-O Patent Blog has been kind enough to post a transcript of the oral argument in Phillips v. AWH before the Federal Circuit. But when you read between the lines, it appears that all of the excitement may (or may not) be short-lived:

As noted by Hal Wegner, the "transcript does not capture the visual image that trumps everything else!" A major highlight of the argument was the change in facial expression of many panel members when they heard appellant's counsel (Manthie) point to chapter, line and verse of the patent document on his easel to support an alternate embodiment. It appeared that those panel members may have been pursuaded that the term 'baffle' should not have been limited, even when using the specification as guide.

According to CNET News.com on February 10, 2005, a report by IDC analysts on Microsoft's policy for indemnifying all end users over most types of intellectual property claims is "fairly neutral" on whether such protection is a major issue for customers. "Recognise this for what it is -- a differentiation strategy," the authors allegedly wrote in their report.

The United States Patent and Trademark Office (USPTO) has announced that support for PASAT will be discontinued within the next few months. PASAT users should make preparations to begin using EFS-ABX. The Patent Electronic Business Center (EBC) is available to provide assistance with downloading, installing and creating your patent application specification using EFS-ABX. EBC representatives can be reached at 703-305-3028 or toll free at 866-217-9197 between the hours of 6 a.m. and midnight Monday through Friday EST, or by e-mail at: ebc@uspto.gov.

"Patent attorneys may not be able to resist the opportunity to exclude prior art in a pending application, and may tend to use the act on a case-by-case basis in knee-jerk fashion," writes J. Matthew Buchanan at Law.com on February 9, 2005. "Effective use of the new law, though, requires careful thought and planning in all stages of your joint research relationships, starting with the joint research agreement and extending through prosecution of all resulting patent applications."

According to their website, this free service from I/P NewsFlash allows you to search for patent families complete with their legal status based on INPADOC data.

Enter a valid publication number such as WO0069863, AU5140000, US6359159 or DE10196055T and press the "Search"button. The search may take up to 1 minute. Your browser window might look like it has already finished loading the page.

According to Hans Verhulst, a consultant at the Centre for Promotion of Imports from Developing Countries (CBI) in The Netherlands, there is a vast pool of know how waiting to be untapped in technology rich countries. While in emerging markets, there is an enormous demand for know how, waiting to be filled:

"Trade in technology" could well be one of the answers to a changing
world. But we need to improve the matching process for this trade i.e. through
licensing. When it comes to transfer of know how and trade secrets which are
hardly â€œpatentableâ€� â€“as is the case with most industrial know how- both parties,
licensor and licensee alike, still seem to be reluctant to cross bridges. . . .

Transfer of know how and trade secrets is not restricted to â€œtechnicalâ€� know how. Know how in each of the value adding activities -- production, marketing, logistics and support -- is also fit for transfer. Unfortunately, the licensing instrument [in these areas is also] underutilized by SMEs. For the most part, this is because licensors are afraid of uncertainties about the protection of their intellectual property, including trade secrets. On the other hand, licensees are reluctant to accept the often severe restrictions that come with license agreements. These in turn are the result of licensors being overcautious to protect their interests. The vicious circle is completed.

Decision & Risk Analysis: Or What is Your Case Worth?
Date: February 11, 2005
Time: 12:30 PM Eastern
Duration: 1 Hour
Phone in #: Please RSVP to info@aplf.org in order to obtain toll free dial in number
Fee: No charge to participate

This APLF Roundtable will discuss the basic concepts of decision and risk analysis and then use a case study with an actual interactive computer decision tree for both the plaintiff and the defendant side of the case, and a settlement negotiation table. The study provides a sensitivity analysis about changing assumptions for probability and value of outcomes, costs of litigation at various decision points, and plaintiff and defendant risk factors. The basic presentation will last about 30 minutes, but plan to allow a full hour for the highly interactive question and answer session that will follow. A short case study is available for your review.

Archived
updates for Wednesday, February 09, 2005

In Alltrade Tools v. Olympia Group (Fed. Cir., Feb. 8, 2005, not citable as precedent) Alltrade marketed the Cobra Bar, a slightly curved pry bar with an hourglass-shaped cross sectional shank. In opposition to the preliminary injunction motion, Alltrade asserted that it did not meet two limitations of Olympia's patent (above):

"an elongate shank having a generally oblong cross section . . . and shank having a major axis within said common plane greater than a minor axis along a direction transverse to said common plane"; and

"an elongate shank . . . defining a longitudinal axis";

Circuit Judge Clevenger noted that although the district court erred in its construction of "generally oblong" by restricting the claim to an elliptical cross section, the court was correct when it found that the claim element "longitudinal axis" necessitated a shank that defined a straight reference line:

We agree with the district court that the scope of the claims should be limited to cover pry bar shanks that are straight. "Longitudinal" means "running lengthwise," Webster's, supra, at 1333, and "axis" is "a straight line about which a body or a 3-dimensional figure rotates or may be supposed to rotate," id. at 153. Other definitions of axis used in various technical fields also explicitly include a straight line. In general math parlance, a coordinate system in three dimensions has an x, y, and z axis, which are straight lines that are perpendicular to each other and used as a reference system to define points in geometric space. See id.

Requiring "longitudinal axis" to mean the strict geometrical definition of an axis of rotation or axis of symmetry would read the embodiment disclosed in Figure 1 [above] of the patent out of the claims. See '553, Figure 1 (disclosing a shank that does not have an axis of rotational symmetry). The "axis" in claim 19 does not include a requirement of rotational symmetry. An axis can simply be "a line actually drawn and used as the basis of measurements in an architectural or other working drawing" or "a main line of direction, motion, growth, or extension." Webster's, supra, at 153. These definitions incorporate the use of the word "line" and state that the line must be such that it can be used as a measurement reference or a direction. A line of reference is necessarily straight. In the specification, the axis is used to define various angles and distances, for example angle Î± and distances d and c in figure 1. The angle of the hook is measured in reference to the axis of the tool. Therefore, the ordinary meaning of the term "axis" as linear is supported by the specification.

Olympia argues that this meaning is contradicted by usage in the prior art, which it suggests teach axes that are not straight. The references relied on by Olympia actually teach the contrary, and show axes drawn as straight reference lines in the patent figures. See U.S. Patent No. 5,577,711, Fig. 1 ("the '711 patent" or "Shine"); U.S. Patent No. 4,844,416, Figs. 1-2 ("the '416 patent" or "Hand"). In fact, the Shine reference uses the "longitudinal axis" in measuring the length of the body of the tool, a linear dimension. '711, col. 3, ll. 5-7. The other reference that Olympia claims discloses a curved axis also shows a straight line. See '416, Fig. 1. The Hand reference actually discloses that "[c]rowbar 10 includes a reference vertical plumb line or axis 12 and a reference horizontal line or axis 14, which is disposed normal to line 12." Id. at col. 2, l. 24. This description suggests an "axis" is a line that can be vertical, horizontal, plumb, or used as a reference. These terms are used in the context of a straight line. Olympia's own references to prior art do not support its assertion that an axis, as used in the prior art, can be curved or nonlinear; rather the art uses the term for straight lines.

Finding that the axis must be linear or straight does not improperly import limitations from the specification. It only incorporates the ordinary meaning of axis found not only in the dictionary but as used in the art. Therefore, the "longitudinal axis" in claim 19 is a straight line that follows the center of the shank lengthwise. Although Olympia argues that the shank curvature of the Alltrade tool is de minimus, they never put in evidence of the deviation. Because the court correctly found that the claim required a linear axis and that this axis is not present in the Cobra Bar, the court did not err in finding that Olympia had not demonstrated a likelihood of success on infringement.

The Two-Seventy-One Patent Blog already has the scuttlebutt on yesterday's oral arguments at the Federal Circuit in Phillips v. AWH Corp. It was standing room onlyfor the over 250 spectators. The perception was that the first three of the seven questions (regarding the use of dictionaries in claim construction) were the main focus of the court's attention.

In "Tricks of the Trade Secrets Case," Victoria A. Cundiff writes that attorneys can often focus on the wrong secret. She cites the example of a key sales person leaving a company. "The first 'secret' that may come to mind is the customer list," she writes. "The reality may be, however, that the customer list itself is not, or is just barely a trade secret." She suggests considering the following points in preparing your case:

According to a February 2005 article in IP Law and Business, companies like InnoCentive (above, created by Eli Lilly in 2001) and NineSigma Inc. (founded in 2000 with the backing of Proctor & Gamble) are taking a new approach in leveraging intellectual property.

InnoCentive has a network of 70,000 registered "solvers" in 165 countries. "Seeker" companies post challenges anonymously, along with the award they'll pay (typically ranging from $10,000 to $100,000) for a solution. The seeker company then decides whether a solution is acceptable and solvers must sign an agreement to turn over IP rights.

NineSigma searches its database of solution providers and sends out anywhere from 5,000 to 20,000 targeted e-mails inviting recipients to propose a solution. Once it gets a pitch it likes, the client--sometimes identified in the initial request, but more often anonymous--goes on to make a deal.

There are other R&D start-ups as well, such as Yet2.com Inc., a Web-based IP brokerage used by both Air Products and Chemicals Inc. and P&G.

Advertisements are common targets for infringement lawsuits. "If you are not cautious, you can lose your IP rights or be liable for infringement of the IP rights of others," writes Lien Verbauwhede in the January 2005 issue of WIPO's SME Newsletter. His article answers questions and provides some tips that can help businesses better protect their advertisements and its content, as well as avoid legal trouble, including

His conclusion? "As with any undertaking, prevention is better than cure. Before launching an advertising campaign, businesses should have it â€˜clearedâ€™ or approved, both from a general legal perspective and from an IP perspective."

In FY 2006, the USPTO anticipates hiring 900 patent examiners and 75 trademark examining attorneys. By the end of FY 2006, the USPTO expects to have over 4,500 patent examiners and over 350 trademark examining-attorneys.

The Patent Law Treaty (PLT) will enter into force on April 28, 2005 with respect to the following ten States:

Republic of Moldova

Kyrgyz Republic

Republic of Slovenia

Slovak Republic

Federal Republic of Nigeria

Ukraine

Republic of Estonia

Kingdom of Denmark

Republic of Croatia

Romania

The Patent Law Treaty (PLT) aims at harmonizing national patent formalities throughout the world. Initially, a first draft Treaty contained provisions relating to substantive harmonization of patent applications and examination procedures, standards for obtaining a patent, and rights and remedies under a patent. However, during a Diplomatic Conference in 1991, divergent views on major issues became apparent, such as the issues of first-to-file and the grace period. In 1995, it was agreed that another approach for promoting harmonization, covering matters concerning the formality requirements of national and regional patent procedures, should be initiated by WIPO. Following this decision, the draft PLT has been discussed first in the Committee of Experts on the Patent Law Treaty, and, since 1998, in the Standing Committee on the Law of Patents (SCP).

In November 2000, the SCP, at its fourth session, agreed that first draft provisions for a future legal instrument should focus initially on a number of issues of direct relevance to the grant of patents, in particular, the definition of prior art, novelty, inventive step/non-obviousness, industrial applicability/utility, the drafting and interpretation of claims and the requirement of sufficient disclosure of the invention. The SCP further agreed that other issues related to substantive patent law harmonization, such as first-to-file versus first-to-invent systems, 18-month publication of applications and a post-grant opposition system, would be considered at a later stage.

In May 2001, the SCP, at its fifth session, considered a first draft of the "Substantive Patent Law Treaty" (SPLT), with Regulations and Practice Guidelines. The draft covered the six issues mentioned above, and the SCP also discussed the interface between the draft SPLT and the PLT and the PCT, and whether the scope of the draft SPLT should be limited to patentability and validity requirements, excluding issues related to the infringement of patents.

At its sixth session, in November 2001, the SCP discussed revised draft provisions and agreed on an approach to establishing a seamless interface between the SPLT, the PLT and the Patent Cooperation Treaty (PCT). It also agreed, based on a proposal by the Delegation of the United States of America, to create a Working Group on Multiple Invention Disclosures and Complex Applications. The Working Group received the mandate to address, in particular, the following issues: (1) unity of invention; (2) the linking of claims; (3) the number of claims; (4) the requirement of "clear and concise" claims and (5) special procedures to treat complex applications, such as mega-applications or large sequence listings.

While the SCP agreed in principle on a number of issues, such as the scope of the SPLT, the right to a patent, novelty, inventive step/non-obviousness or the requirement of sufficient disclosure, some provisions, such as patentable subject matter or the exceptions to patentability, "raised more fundamental issues." So don't hold your breath for patent harmonization; the work of the SPC is now in its ninth session.

"Europe urgently needs more people to choose research careers and existing research staff need incentives to stay in Europe. We need no less than 700,000 new researchers by 2010. A scientific career in Europe must be made more attractive to young Europeans and to third country researchers who at present choose instead to head for the United States. . . .

"The introduction of a Community patent is long overdue, and an urgent priority, which would give a real boost to research and development."

The Patent Office Professional Association's December/January "Radio Free PTO" newsletter "discusses the Inspector General's ludicrous recommendation that production goals be increased because of the USPTO's 'automation and other enhancements.' Also featured are the return of the Legal Studies Program and highlights of Director Dudas' speech to POPA employees."

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